Long-time Googler will head Silicon Valley patent office

Michelle Lee has been "in the trenches" fighting patent trolls.

Michelle Lee, a former Google attorney who was one of the first corporate lawyers to speak out about the harmful effects of patent trolls, will be the director of a new 'satellite office' of the US Patent and Trademark Office.

The move was announced Friday afternoon at a conference about software patents, sponsored by Santa Clara University.

Lee is a Silicon Valley native who grew up in Saratoga, California, with a father who worked as an engineer in the semiconductor industry. While studying for a PhD in computer science, she decided to switch routes and study intellectual property law. "It dawned on me that there were some pretty important legal issues that were being decided, that were hugely influenced by new technological innovation," Lee told the San Jose Business Journal earlier this year. She left a partnership at Fenwick & West, a well-known Silicon Valley law firm, to join Google in 2003.

By 2009, Lee was talking publicly and blogging about how so-called "patent trolls" were a growing burden for Google, and the tech sector at large. That same year she authored a blog post saying that patent reform was needed "now more than ever." Of twenty patent lawsuits that had been filed against Google, only two were from companies with any products or services. (Twenty lawsuits seems quaint in today's environment, with Google having fought or settled more than 100 patent cases, mostly filed by trolls.) Lee also noted a "more disturbing" trend: "In many of these cases, the patents being asserted against us are owned by—and in a surprising number of cases, are even 'invented' by—patent lawyers themselves." Lee left Google in June, but didn’t say where she was headed.

Lee declined to talk about her new position with the USPTO, but Caroline Dennison, a legal advisor at the patent office, said her hiring was a sign of the office's dedication to better dialogue with the tech sector. "[Lee] has been in the trenches with the non-practicing entities in litigation," said Dennison. "She gets it, she knows what's going on. And we couldn't be more thrilled to have her. Director [David] Kappos is committed to this industry, and committed to looking for solutions to this problem. We plan on having this to be not just a satellite office, but a platform for outreach."

The Silicon Valley office is one of three satellite offices to be opened, with the other two opening in Denver and Dallas-Fort Worth. USPTO is scouting for office space in all three locations.

The Santa Clara University patent conference has generally been a breeding ground for discussions friendly to defense-oriented thinking, tech companies large and small, and patent reformers. There was applause all around for Michelle Lee, and her hiring is seen as a good sign. Still, she will be a cog in a big bureaucracy, and the idea of reform coming to the USPTO seems far off. The office is funded by patent fees, examiners can spend only a short time analyzing patents, and all the incentives align towards granting more patents.

Surely having short-lived patents (that required renewal and proof of usage/non-standardization to renew) would lead to potentially increased revenue for the USPTO? For companies with valuable, useful and actively acted upon patents, they will renew for as long as it's financially viable.

At the same time, patents should be able to be both peer reviewed and flagged for obsoletion if the technologies patented are deemed standardised, and companies forced to FRAND them.

Note: I've had a few beers tonight and I'm not a lawyer nor a US citizen, so I'm not 100% certain of the specific rules involved (and whether there's some legal reasons anything I suggested wouldn't be possible).

She stands, one arm folded around herself, smoking a cigarette, staring off into nothing."What was it like, you ask, during the Great Patent Troll Wars?" She puff a cloud of smoke, thinking."I am not sure I can describe it... the stench, the screams... you never forget it, but you can't seem to describe it to someone who hasn't see it themselves." She shrugs."When you are targeted by something that you know just exists to parasitize the implementors, the doers of society, you are shaken to your soul. When you destroy that monster, you have no guilt. I feel no guilt, no shell shock, the doctors call it. I know I did the right thing. I would do it again."She leans her head back and smiles a bit.

I'm sure that could be offset by making a large fee payable up-front with a chunk of it refunded on grant. That way there would be a limitation on filing at random and an incentive for the patent office to not grant frivilous patents (they keep more fees when the patent isn't granted).

Instead of hiring employees from the companies they would be regulating, it would be better to create an independent commission or something similar to what scientists use like a peer review.

More eyes need review potential patents and more eyes need to power to recommend removing a serious number of patents on the books that should never have been granted.

Consider all those hand gestures for touch being patented. Now imagine if today's patent office with it's new charter were around in the early 1990s, those buttons we use for Cut Copy and Paste would be patented and every application would use different keys...

I'm sure that could be offset by making a large fee payable up-front with a chunk of it refunded on grant. That way there would be a limitation on filing at random and an incentive for the patent office to not grant frivilous patents (they keep more fees when the patent isn't granted).

Of course... I don't see that happening any time soon.

The drawback to this approach is that it would be hugely beneficial to major corporations and massive barrier to entry for individual inventors or new entrants to a field.

Anything that makes it more difficult to get a patent will be strongly supported by major corporations.

I'm sure that could be offset by making a large fee payable up-front with a chunk of it refunded on grant. That way there would be a limitation on filing at random and an incentive for the patent office to not grant frivilous patents (they keep more fees when the patent isn't granted).

Of course... I don't see that happening any time soon.

The drawback to this approach is that it would be hugely beneficial to major corporations and massive barrier to entry for individual inventors or new entrants to a field.

Anything that makes it more difficult to get a patent will be strongly supported by major corporations.

Patents are NOT cheap anymore. The MINIMUM for a *good* US patent is five GRAND, as in five THOUSAND dollars and that if for something as basic as a coat hanger, paper clip, or diapers.

Another site states "Based on the uncertainties of the searching process, and the number of amendments and drawings that may be required, one can typically expect to spend at least $10000.00 for obtaining a United States Patent."

The barrier is ALREADY there. And yet with this mammoth outlay of money required the US Patent Office is overloaded with 500,000 patents being submitted a year and back log of some 700,000 already in the pipe line. The ONLY way to stop the insanity is to raise the bar.

The barrier is ALREADY there. And yet with this mammoth outlay of money required the US Patent Office is overloaded with 500,000 patents being submitted a year and back log of some 700,000 already in the pipe line. The ONLY way to stop the insanity is to raise the bar.

I agree completely. Now, this is not directed at you and I'm just throwing this out there. What if, instead of the cost of patents, the barrier was that you could only patent hardware implementations which are non-obvious and have no prior art? God, I wish someone had thought of that when they wrote the patent law...

The barrier is ALREADY there. And yet with this mammoth outlay of money required the US Patent Office is overloaded with 500,000 patents being submitted a year and back log of some 700,000 already in the pipe line. The ONLY way to stop the insanity is to raise the bar.

I agree completely. Now, this is not directed at you and I'm just throwing this out there. What if, instead of the cost of patents, the barrier was that you could only patent hardware implementations which are non-obvious and have no prior art? God, I wish someone had thought of that when they wrote the patent law...

So something with gears and wires and switches is patentable, but the exact same thing recorded as software isn't?

The barrier is ALREADY there. And yet with this mammoth outlay of money required the US Patent Office is overloaded with 500,000 patents being submitted a year and back log of some 700,000 already in the pipe line. The ONLY way to stop the insanity is to raise the bar.

I agree completely. Now, this is not directed at you and I'm just throwing this out there. What if, instead of the cost of patents, the barrier was that you could only patent hardware implementations which are non-obvious and have no prior art? God, I wish someone had thought of that when they wrote the patent law...

So something with gears and wires and switches is patentable, but the exact same thing recorded as software isn't?

That was the general feeling regarding software back before the whole process snuck in the back door.

Because there isn't much substantively different in software implementations aside from which hardware architecture they're designed for, patenting the architecture was fine. Patenting the software itself was not.

Particularly sticky is the prior art wicket with your example. If the gears are patented or have been patented before, the software itself should be obvious. Current practice has not worked under that premise, instead opting to allow software itself to be the prior art for implementations.

This is why we're looking at patents that are literally "thing everyone would think of on a mobile device," and that is where the public has expressed its displeasure.

So what we need is a patent review board with membership from all the regulars and let them duke it out. Make part of the process adversarial where you need majority approval.

Wow.

You know, a lot of stupid things get said in comments.

This may be the dumbest.

Ever.

[/Handsome Jack]

That's a bit harsh of a takedown. Although it is one of the more awful ideas I have read here. Such a system would lead to no patents at all, because any board of "regulars" would simply not want to see any possible competitor get a patent.

This is good. It brings hope that we will see some forward progress towards meaningful patent reform.

She has no say over patent reform. She will, however, be a good voice for what is and is not truly unique in the patent granting process.

I know. However, it starts to change the culture surrounding the issue, and that does have some influence.

It still brings hope, at least.

I think she will have a fair amount of influence on the culture, as sidran suggests. The previous Director of the USPTO under W Bush, Jon Dudas, had (intentionally or inadvertently) developed a culture of "make it hard to grant patents by using formalities", which only lead to a longer time needed to get a patent, and not a substantively more focused patent. David Kappos, under Obama, has enacted about as many procedural reforms as possible to make the process more efficient, and has intentionally pushed a culture of "the patent office exists to grant patents of good quality". Now, what can be rejected and allowed is in flux, but the USPTO is trying to accurately meet the ambiguous standards set forth by the courts. That's all an agency like the USPTO* can, and should, do.

*The USPTO lacks "Chevron deference" so the Courts don't have to give much weight to what the USPTO policies are, just what Congressional instructions there are in the statutes. Other agencies have more ability to set their own agendas.

I'm sure that could be offset by making a large fee payable up-front with a chunk of it refunded on grant. That way there would be a limitation on filing at random and an incentive for the patent office to not grant frivilous patents (they keep more fees when the patent isn't granted).

Of course... I don't see that happening any time soon.

The drawback to this approach is that it would be hugely beneficial to major corporations and massive barrier to entry for individual inventors or new entrants to a field.

Anything that makes it more difficult to get a patent will be strongly supported by major corporations.

Patents are NOT cheap anymore. The MINIMUM for a *good* US patent is five GRAND, as in five THOUSAND dollars and that if for something as basic as a coat hanger, paper clip, or diapers.

Another site states "Based on the uncertainties of the searching process, and the number of amendments and drawings that may be required, one can typically expect to spend at least $10000.00 for obtaining a United States Patent."

The barrier is ALREADY there. And yet with this mammoth outlay of money required the US Patent Office is overloaded with 500,000 patents being submitted a year and back log of some 700,000 already in the pipe line. The ONLY way to stop the insanity is to raise the bar.

So you are claiming that the current system already favors corporations and your solution is to make it favor them even more???

Joe Mullin - I think, in fact I know, you are incorrect on the locations of the USPTO satellite offices. Detroit was the first city to open an office back in August, and Denver and Silicon Valley are the other two locations, not Dallas. http://www.uspto.gov/blog/director/entr ... in_detroit

Joe Mullin - I think, in fact I know, you are incorrect on the locations of the USPTO satellite offices. Detroit was the first city to open an office back in August, and Denver and Silicon Valley are the other two locations, not Dallas. http://www.uspto.gov/blog/director/entr ... in_detroit

Joe Mullin - I think, in fact I know, you are incorrect on the locations of the USPTO satellite offices. Detroit was the first city to open an office back in August, and Denver and Silicon Valley are the other two locations, not Dallas. http://www.uspto.gov/blog/director/entr ... in_detroit

(Although for some reason I had it in my head that the Texas office was going to be in Houston. Go figure.)

Than USPTO reversed their decisions as they were only going to open three satellite offices, as that is what Congress authorized initially. And nowhere do I see in the authors statement "The Silicon Valley office is one of three satellite offices to be opened" that there are FOUR offices.